`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`________________
`
`Case IPR2020-01714
`U.S. Patent 10,631,765
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`

`

`
`
`I. 
`II. 
`
`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`GROUND 1 ESTABLISHES OBVIOUSNESS ............................................. 1 
`A.  Ohsaki does not teach or require, its convex translucent board 8 to be
`“rectangular” in shape. .............................................................................. 6 
`B.  A POSITA would have recognized the benefits of Ohsaki’s teachings
`when applied to Mendelson-799’s sensor, at virtually any measurement
`location. ................................................................................................... 11 
`C.  Adding a convex cover to Mendelson-799 as taught by Ohsaki enhances
`the sensor’s light-gathering ability. ........................................................ 14 
`1.  Masimo ignores the behavior of scattered light in relation to
`reflectance-type pulse sensors and oximeters. .............................. 15 
`2.  A POSITA would have implemented the sensor resulting from the
`combination of Mendelson-799 and Ohsaki to prevent air gaps
`between the skin and the detectors ................................................ 19 
`D.  A POSITA would have found the advantages of using a convex cover to
`outweigh the slight possibility of scratching the cover .......................... 20 
`E.  A POSITA would have added an opaque layer to the combined sensor of
`Mendelson-799 and Ohsaki based on the teachings of Schulz ............... 21 
`1.  A POSITA would have modified the combined sensor of
`Mendelson-799 and Ohsaki to guard against saturation based on
`Schulz’s teachings ......................................................................... 21 
`Schulz’s teachings are applicable to the combined sensor of
`Mendelson-799 and Ohsaki ........................................................... 23 
`3.  A POSITA would have understood Schulz’s teachings to render
`obvious a corresponding window for each of at least four
`detectors. ........................................................................................ 25 
`4.  A POSITA would have understood Schulz’s window to restrict the
`amount of ambient light reaching the corresponding detector ...... 25 
`F.  A POSITA would have enabled the combined sensor of Mendelson-799,
`Ohsaki, and Schulz to communicate wirelessly with a handheld
`computing device, based on the teachings of Mendelson-2006 ............. 27 
`G.  A POSITA would have expected success in performing the combination
` ................................................................................................................. 29 
`H.  The challenged dependent claims are rendered obvious by Mendelson-
`799, Ohsaki, Schulz, and Mendelson-2006. ........................................... 30 
`
`2. 
`
`ii
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`

`

`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`III.  GROUNDS 2-4 ESTABLISHES OBVIOUSNESS ...................................... 31 
`IV.  CONCLUSION .............................................................................................. 32 
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`iii
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`

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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`US Patent No. 10,631,765
`
`APPLE-1002
`
`File History for the ’765 Patent
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil
`Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s
`Declaration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote
`Physiological Monitoring,” Y. Mendelson, et al.; Proceedings
`of the 28th IEEE EMBS Annual International Conference,
`2006; pp. 912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`US Pub. No. US 2007/0093786 (“Goldsmith”)
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014
`
`RESERVED
`
`APPLE-1015
`
`RESERVED
`
`APPLE-1016
`
`US Patent No. 3,789,601 (“Bergey”)
`
`iv
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`

`

`
`APPLE-1017
`
`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`Vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`“Skin Reflectance Pulse Oximetry: In Vivo Measurements from
`the Forearm and Calf,” Y. Mendelson, et al.; Journal of Clinical
`Monitoring, vol. 7, No. 1, January 1991 (“Mendelson 1991)
`
`APPLE-1019
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`How to Do Everything with Windows Mobile, Frank
`McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Master Visually Windows Mobile 2003, Bill Landon, et al.;
`Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`“Stimulating Student Learning with a Novel ‘In-House’ Pulse
`Oximeter Design,” J. Yao and S. Warren; Proceedings of the
`2005 American Society for Engineering Education Annual
`Conference & Exposition, 2005 (“Yao”)
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`US Pub. No. 2007/0145255 (“Nishikawa”)
`
`APPLE-1027
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028-1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`v
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`

`

`
`APPLE-1032
`
`APPLE-1033
`
`APPLE-1034
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`APPLE-1035
`
`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
`
`Stipulation by Apple
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`APPLE-1036
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`APPLE-1037
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038
`
`U.S. Patent No. 7,558,622 (“Tran”)
`
`APPLE-1039
`
`Declaration of Jacob R. Munford
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple et al., Case 8:20-cv-00048, Paper 201 (Sep-
`tember 21, 2020)
`
`APPLE-1041
`
`U.S. Patent No. 7,251,513 (“Kondoh”)
`
`APPLE-1042
`
`JP Pub. No. 2005-270543 (“Tanagi”)
`
`APPLE-1043
`
`Certified English Translation of Tanagi and Translator’s
`Declaration
`
`vi
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`APPLE-1044
`
`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
`
`Order Granting Motion to Stay in Masimo Corporation et al. v.
`Apple Inc., Civil Action No. 8:20-cv-00048-JVS-JDE, October
`13,2020
`
`APPLE-1045
`
`Second Declaration of Jacob R. Munford
`
`APPLE-1046
`
`Declaration of Gordon MacPherson
`
`APPLE-1047
`
`Second Declaration of Dr. Thomas W. Kenny
`
`APPLE-1048
`
`RESERVED
`
`APPLE-1049
`
`Eugene Hecht, Optics (4th Ed. 2002)
`
`APPLE-1050
`
`Excerpts of Eugene Hecht, Optics (2nd Ed. 1990), pages 79-143,
`211-220
`
`APPLE-1051
`
`Eugene Hecht, Optics (2nd Ed. 1990)
`
`APPLE-1052
`
`APPLE-1053
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 1 (August 1,
`2021)
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 2 (August 2,
`2021)
`
`APPLE-1054
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01536, IPR2020-01538 (August 3, 2021)
`
`APPLE-1055
`
`“Refractive Indices of Human Skin Tissues at Eight
`Wavelengths and Estimated Dispersion Relations between 300
`and 1600 nm,” H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp.
`1479-1489 (“Ding”)
`
`APPLE-1056
`
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`(“Kasarova”)
`
`vii
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`

`
`APPLE-1057
`
`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
`
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE
`Transactions on Biomedical Engineering, Vol. 35, No. 10,
`October 1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`
`APPLE-1058
`
`US Patent No. 6,198,951 (“Kosuda”)
`
`APPLE-1059
`
`Third Declaration of Jacob Robert Munford
`
`
`
`
`
`
`
`viii
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`I.
`Introduction
`Apple Inc. (“Petitioner” or “Apple”) submits this Reply to Patent Owner’s
`
`Response (“POR”) to the Petition for Inter Partes Review (“IPR”) of U.S. Patent
`
`No. 10,631,765 (“the ’765 patent”) filed by Masimo Corporation (“Patent Owner”
`
`or “Masimo”). As demonstrated below, Apple respectfully submits that the Board
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`should find claims 1-29 (“the Challenged Claims”) of the ’765 patent unpatentable.
`
`II. Ground 1 Establishes Obviousness
`In its POR, Masimo first addresses the “Mendelson ’799 and Ohsaki”
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`portion of the full Mendelson ’799-Ohsaki-Schulz-Mendelson 2006 combination
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`advanced in Ground 1. As Dr. Kenny explained at length in his first declaration,
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`“Ohsaki would have motivated a POSITA to add a light permeable protruding
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`convex cover to Mendelson-799’s sensor, to [1] improve adhesion between the
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`sensor and the user’s tissue, to [2] improve detection efficiency, and to [3] provide
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`additional protection to the elements accommodated within sensor housing 17.”
`
`APPLE-1003, [0098]. Rather than attempting to rebut Dr. Kenny’s testimony,
`
`Masimo offers, through its witness Dr. Madisetti, arguments that are factually
`
`flawed and legally irrelevant. APPLE-1047, ¶7; see also ¶¶1-80.
`
`Specifically, Masimo contends that Mendelson-799 and Ohsaki “employ (1)
`
`different sensor structures…(2) for different measurements…(3) in different
`
`measurement locations,” and from this concludes that “[a] POSITA would not
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`1
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`

`

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`have been motivated to combine” the references, and would not have “reasonably
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`expected such a combination to be successful.” POR, 1-4.
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`In this way, the POR avoids addressing the merits of the combinations
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`advanced in Apple’s Petition, and ignores the “inferences and creative steps” that a
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`POSITA would have taken when modifying Mendelson-799’s sensor to achieve
`
`the benefits taught by Ohsaki. APPLE-1047, ¶¶8-9; KSR Intern. Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007).
`
`Contrary to Masimo’s contentions, Ohsaki nowhere describes its benefits as
`
`being limited to a rectangular pulse rate sensor applied to a particular body
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`location, and a POSITA would not have understood those benefits as being so
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`limited. APPLE-1047, ¶10. Instead, and as shown in Ohsaki’s FIG. 2 (reproduced
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`below), Ohsaki attributes the reduction of slippage afforded by use of translucent
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`board 8 (and improvements in signal quality) to the fact that “the convex surface
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`of the translucent board…is in intimate contact with the surface of the user’s
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`skin”1 when the sensor is worn. APPLE-1003, [0095]; APPLE-1009, [0015],
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`[0017]-[0018], [0025], FIGS. 1, 2, 4A, 4B.
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`1 Unless otherwise noted, emphases in quotations throughout this Reply are added.
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`2
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`APPLE-1009, FIG. 2 (annotated).
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`
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`Notably absent from Ohsaki’s discussion of these benefits is any mention or
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`suggestion that they relate to a shape of the exterior edge of Ohsaki’s board
`
`(whether circular, rectangular, or other). APPLE-1047, ¶11. Instead, Ohsaki
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`contrasts a “convex detecting surface” from a “flat detecting surface,” and explains
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`that “if the translucent board 8 has a flat surface, the detected pulse wave is
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`adversely affected by the movement of the user’s wrist,” but that if the board “has
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`a convex surface…variation of the amount of the reflected light…that reaches
`
`the light receiving element 7 is suppressed.” APPLE-1003, [0096]; APPLE-1009,
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`[0015], [0025].
`
`From this and related description, a POSITA would have understood that a
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`light permeable protruding convex cover would reduce slippage of Mendelson-
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`3
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`

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`799’s sensor when worn and, in turn, reduce the adverse effects of user movement
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`on signals obtainable by the detectors within Mendelson-799’s sensor (which like
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`Ohsaki’s light receiving elements, detect light reflected from user tissue). APPLE-
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`1047, ¶12; APPLE-1009, [0025]; FIGS. 4A, 4B; APPLE-1012, 3:5-14, 6:16-35,
`
`8:27-29, 1:41-60; APPLE-1019, 36-37, 87-88, 91, 124. Indeed, and as described
`
`by Dr. Kenny, the POSITA would have found it obvious to improve Mendelson-
`
`799’s pulse oximeter based on Ohsaki’s teachings, and would have been fully
`
`capable of making any inferences and creative steps necessary to achieve the
`
`benefits obtainable by attaching a light permeable protruding convex cover to
`
`Mendelson-799’s housing.2 APPLE-1047, ¶12; KSR, 550 U.S. at 418; see also
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`APPLE-1008, [0058], FIG. 2; APPLE-1026, [0022], [0032], [0035], FIG. 6.
`
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`2 Notably, Ohsaki nowhere depicts or describes its cover as rectangular. APPLE-
`
`1047, ¶12; APPLE-1009, [0001]-[0030]; FIGS. 1, 2, 3A, 3B, 4A, 4B. Even if
`
`Ohsaki’s cover were understood to be rectangular, “[t]he test for obviousness is not
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference….” Allied Erecting v. Genesis Attachments, 825
`
`F.3d 1373, 1381 (Fed. Cir. 2016).
`
`
`
`4
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`

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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`
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`APPLE-1003, [0099] (showing APPLE-1012, FIG. 7 (annotated, with
`
`additional section view)).
`
`Furthermore, the POSITA would have in no way been dissuaded from
`
`achieving those benefits by a specific body location associated with Ohsaki’s
`
`sensor. POR, 32-38; APPLE-1047, ¶¶13-15. Indeed, it has been well understood
`
`for decades that reflective pulse oximetry sensors like Mendelson-799’s can be
`
`placed “on virtually any place on the body where we can expect light reflection
`
`due to tissue.” APPLE-1019, 91. And a POSITA would have understood that a
`
`light permeable convex cover would have provided the benefits described by
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`5
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`

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`Ohsaki in a sensor placed, for example, on the palm side of the wrist or forearm.
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`APPLE-1047, ¶13; see also APPLE-1009, [0025], Claims 4-8; FIGS. 4A, 4B.
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`For these and other reasons explained below, Apple respectfully submits that
`
`the Board should reject Masimo’s arguments, which avoid addressing the merits of
`
`the combinations advanced in Apple’s Petition, and which are grounded in
`
`disregard for well-established principles of patent law. For example, that “[a]
`
`person of ordinary skill is also a person of ordinary creativity, not an
`
`automaton,” and that “[t]he test for obviousness is not whether the features of a
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`secondary reference may be bodily incorporated into the structure of the primary
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`reference,” but is instead “what the combined teachings of those references would
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`have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413
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`(C.C.P.A. 1981); Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313,
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`1333 (Fed. Cir. 2020); KSR, 550 U.S. at 418.
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`The sections below address the arguments with respect to Ground 1
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`presented in Masimo’s POR against the backdrop of the description above. As
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`explained below, these arguments fail. See APPLE-1047, ¶16
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`A. Ohsaki does not teach or require, its convex translucent
`board 8 to be “rectangular” in shape.
`As noted above, the Petition demonstrates that “Ohsaki would have
`
`motivated a POSITA to add a light permeable protruding convex cover to
`
`Mendelson ’799’s sensor” at least “to improve adhesion between the sensor and
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`6
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`the user’s tissue[.]” Petition, 24-25. As also described above, Ohsaki (at [25])
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`describes that the “convex surface of the translucent board 8” is responsible for this
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`improved adhesion. See id.; APPLE-1047, ¶17.
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`Masimo argues that it is not the “convex surface” that improves adhesion
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`(i.e., reduces slippage) in Ohsaki, but instead a supposed “longitudinal shape” of
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`“Ohsaki’s translucent board [8].” See POR, 23-28. But the portions of Ohsaki
`
`cited to support this characterization do not include any reference to translucent
`
`board 8. See APPLE-1009, [0019]. Instead, the cited portion of Ohsaki ascribes
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`this “longitudinal” shape to a different component: “detecting element 2.” Id.
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`Ohsaki never describes the “translucent board 8” as “longitudinal,” and nowhere
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`does Ohsaki describe the “translucent board 8” and “detecting element 2” as
`
`having the same shape. See generally APPLE-1009; APPLE-1047, ¶18. In fact, as
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`illustrated in Ohsaki’s FIG. 2, the translucent board 8 (annotated yellow) is not
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`coextensive with the entire tissue-facing side of detecting element 2 (annotated
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`green). APPLE-1047, ¶18:
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`7
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`APPLE-1009, FIG. 2 (annotated)
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`
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`Based on its unsupported contention that translucent board 8 must have a
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`“very pronounced longitudinal directionality”, Masimo concludes that translucent
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`board 8 has a “rectangular” shape that is allegedly incompatible with Mendelson-
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`799. See POR, 17-19. But Ohsaki never describes translucent board 8, or any
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`other component, as “rectangular.” See generally APPLE-1009; APPLE-1047,
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`¶19.
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`Indeed, the POR incorrectly assumes that because Ohsaki’s light emitting
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`element and the light receiving element are arranged in a longitudinal structure,
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`8
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`Ohsaki’s translucent board must have a rectangular structure. APPLE-1009,
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`Case No. IPR2020-01714
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`[0009], [0019]; POR, 1-3, 22-28. A POSITA would have known and understood
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`that an elliptical or circular sensor or board configuration can also have a
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`longitudinal structure or appearance under a cross-sectional view, as shown in the
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`figures below. APPLE-1058, 8:42-56; APPLE-1047, ¶20.
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`Circular circuit board
`appears rectangular
`in cross view
`
`Circular circuit board
`in plan view
`
`APPLE-1060, FIGS 3 and 4
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`
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`Attempting to confirm its false conclusion, the POR asserts that “Ohsaki
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`illustrates two cross-sectional views of the board that confirm it is rectangular.”
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`POR, 17. Masimo identifies these “two cross-sectional views” as FIGS. 1 and 2,
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`9
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`and infers the supposed “rectangular shape” of the translucent board 8 based on
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`FIG. 1 showing the “short” side of the device, and FIG. 2 showing the “long” side
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`of the same device. See POR, 17-18. But, according to Ohsaki, FIG. 2 is “a
`
`schematic diagram,” not a cross-sectional view, and Ohsaki never specifies that
`
`FIGS. 1 and 2 are different views of the same device. APPLE-1009, [0013].
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`Accordingly, nothing in Ohsaki supports Masimo’s inference that the “translucent
`
`board 8” must be “rectangular” in shape. See, e.g., APPLE-1009, [0013], [0019],
`
`[0025], FIG. 2; APPLE-1047, ¶21; Hockerson-Halberstadt v. Avia, 222 F.3d 951,
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`956 (Fed. Cir. 2000). Further, even if it is possible for the translucent board 8 to be
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`“rectangular,” Ohsaki certainly does not include any disclosure “requiring” this
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`particular shape. See id.
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`Section B.1 of the POR presents several arguments premised on Ohsaki
`
`requiring the translucent board 8 to be “rectangular.” See POR, 22-31. Because
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`Ohsaki neither teaches nor requires any such shape for the translucent board 8,
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`these arguments fail. APPLE-1047, ¶¶17-23.
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`In addition, as discussed above (supra, 6-7), even if Ohsaki’s translucent
`
`board 8 were somehow understood to be rectangular, obviousness does not require
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`“bodily incorporation” of features from one reference into another, and a POSITA,
`
`being “a person of ordinary creativity, not an automaton,” would have been fully
`
`capable of attaching a light permeable protruding convex cover to Mednelson-
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`10
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`799’s housing to obtain the benefits attributed to such a cover by Ohsaki. APPLE-
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`Case No. IPR2020-01714
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`1047, ¶23; Facebook, 953 F.3d at 1333; KSR, 550 U.S. at 418.
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`B. A POSITA would have recognized the benefits of Ohsaki’s
`teachings when applied to Mendelson-799’s sensor, at
`virtually any measurement location.
`Masimo contends that Ohsaki’s benefits are specific to “the backhand side of
`
`the wrist.” POR, 32. But Ohsaki does not describe that its sensor can only be used
`
`at backside of the wrist. APPLE-1047, ¶24. Instead, at most, Ohsaki describes
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`such an arrangement with respect to a preferred embodiment. Id.; APPLE-1009,
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`[0019].
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`Indeed, Ohsaki’s disclosure reinforces that Ohsaki’s description would not
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`have been understood as so limited. APPLE-1047, ¶25. For example, Ohsaki
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`explains that “the detecting element 2…may be worn on the back side of the user's
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`forearm” as one form of modification. See APPLE-1009, [0030], [0028].3
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`Similarly, Ohsaki’s independent claim 1 states that “the detecting element is
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`constructed to be worn on a back side of a user’s wrist or a user’s forearm.” See
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`3 As Dr. Kenny explains, the gap between the ulna and radius bones at the forearm
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`is even greater than the gap between bones at the wrist, which is already wide
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`enough to easily accommodate a range of sensor shapes (including circular).
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`APPLE-1047, ¶25.
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`11
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`also APPLE-1009, Claims 1-2. As another example, Ohsaki’s independent claim
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`5 states that “the detecting element is constructed to be worn on a user’s wrist or a
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`user’s forearm,” without even mentioning a backside of the wrist or forearm. See
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`also APPLE-1019, Claims 6-8. From this and related description, a POSITA
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`would have understood that Ohsaki’s benefits are provided when the sensor is
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`placed, for example, on either side of the user’s wrist or forearm. APPLE-1047,
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`¶25; APPLE-1009, [0025], FIGS. 4A, 4B.
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`Moreover, even if a POSITA would have somehow misunderstood Ohsaki’s
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`sensor as limited to placement on the backside of the wrist, and even if the
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`difficulty that Masimo alleges with respect to obtaining pulse oximetry
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`measurements from that location were true, that would have further motivated the
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`POSITA to implement a light permeable convex cover in Mendelson-799’s sensor,
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`to improve detection efficiency. APPLE-1047, ¶26; POR, 32-38; APPLE-1009,
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`[0015], [0017], [0025], FIGS. 1, 2, 4A, 4B.
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`Indeed, when describing advantages associated with its translucent board,
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`Ohsaki explains with reference to FIGS. 4A and 4B (reproduced below) that “if the
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`translucent board 8 has a flat surface, the detected pulse wave is adversely affected
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`by the movement of the user’s wrist,” but that if the board “has a convex
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`surface…variation of the amount of the reflected light…that reaches the light
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`12
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`receiving element 7 is suppressed.” APPLE-1003, [0096]; APPLE-1009, [0015],
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`[0017], [0025].
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`
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`APPLE-1009, FIGS. 4A, 4B.
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`
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`As discussed above (supra, 6), a POSITA would have understood that
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`reflectance pulse oximetry sensors like Mendelson-799’s can be placed “on
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`virtually any place on the body where we can expect light reflection due to tissue,”
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`and would have further understood from Ohsaki that, by promoting “intimate
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`contact with the surface of the user’s skin,” a light permeable convex cover would
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`have reduced slippage of Mendelson-799’s sensor when placed, for example, on
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`either side of a user’s wrist or forearm, with additional associated improvements in
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`13
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`signal quality. APPLE-1047, ¶¶24-28; APPLE-1019, 91; APPLE-1009, [0015],
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`[0017], [0025], FIGS. 4A, 4B, Claims 4-8.
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`C. Adding a convex cover to Mendelson-799 as taught by
`Ohsaki enhances the sensor’s light-gathering ability.
`In defiance of fundamental principles of elementary optics, Masimo argues
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`that a POSITA would not have combined Mendelson-799 and Ohsaki as proposed
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`because “A Convex Cover Directs Light To The Center Of The Sensor” and “away
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`from the detectors.”4 POR, 38-43; Ex. 2004, ¶¶71-76. As explained in more detail
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`below, a POSITA would have understood the opposite to be true: that Ohsaki’s
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`cover would improve Mendelson-799’s signal-to-noise ratio by causing more light
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`backscattered from tissue to strike Mendelson-799’s detectors than would have
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`4 Masimo and its witness Dr. Madisetti fail to articulate a coherent position. For
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`example, Dr. Madisetti testified during deposition that “if you have a convex
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`surface…all light reflected or otherwise would be condensed or directed towards
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`the center.” APPLE-1052, 40:4-11; POR, 38-43, Ex. 2004, ¶¶71-76. However, Dr.
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`Madisetti further testified that “the center” could be “a general area at which the
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`convex surface would be redirecting…light” or “a point,” while contrasting the
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`phrase “to the center” from “towards the center.” APPLE-1052, 133:19-135:11,
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`40:4-11, 127:22-128:18.
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`14
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`absent the cover. APPLE-1047, ¶¶29-44; APPLE-1019, 52, 86, 90; APPLE-1051,
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`84, 87-92, 135-141; APPLE-1057, 803-805; APPLE-1012, FIG. 7; Ex. 2006,
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`164:8-16.
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`1. Masimo ignores the behavior of scattered light in
`relation to reflectance-type pulse sensors and
`oximeters.
`Masimo relies heavily on FIG. 14B from the ’765 patent (reproduced below)
`
`to support its contention that a convex cover would direct light to a point in the
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`center of the combined sensor:
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`APPLE-1001, FIG. 14B (as annotated at POR, 40)
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`15
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`Masimo and Dr. Madisetti treat this figure as an illustration of the behavior
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`of a convex surface with respect to “all types of light,” regardless of the angle of
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`incidence, and conclude that “the convex shape directs light from the periphery
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`toward the center” as shown in FIG. 14B. POR, 39-40; APPLE-1052, 56:9-60:2,
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`127:22-128:18; APPLE-1052, 40:4-11.
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`But FIG. 14B is not an accurate representation of light that has been
`
`reflected from a tissue measurement site. The light rays (1420) shown in FIG. 14B
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`are collimated (i.e., travelling paths parallel to one another), and each light ray’s
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`path is perpendicular to the detecting surface. APPLE-1047, ¶¶30-35; see Ex.
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`2007, 298:11-299:1.
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`In this regard, Dr. Madisetti’s overly-simplistic statements only apply to a
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`special narrow case of collimated light incident on a convex lens along the axis of
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`symmetry. APPLE-1053, 166:12-182:3; APPLE-1047, ¶36. A POSITA would
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`have understood that Dr. Madisetti’s statements do not reflect the behavior of
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`diffuse light incident on a convex lens-like surface, such as the light incident on the
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`convex cover of the combined sensor of Mendelson-799 and Ohsaki. APPLE-
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`1047, ¶36.
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`The detector(s) of reflectance type pulse detectors and oximeters detect light
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`that has been “partially reflected, transmitted, absorbed, and scattered by the skin
`
`and other tissues and the blood before it reaches the detector.” APPLE-1019, 86;
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`16
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`APPLE-1047, ¶37. In other words, and as a POSITA would have understood from
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`Mendelson-799’s FIG. 7, the light that backscatters from the measurement site
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`after diffusing through tissue reaches the circular active detection area provided by
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`Mendelson-799’s detectors from various directions and angles, as opposed to all
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`light entering from the same direction and at the same angle as shown in FIG. 14B.
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`APPLE-1047, ¶¶37-38; APPLE-1019, 52, 86, 90; APPLE-1057, 803-805; see also
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`APPLE-1012, FIG. 7.
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`Further, far from focusing light towards the center as Masimo contends, a
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`POSITA would have understood that Ohsaki’s cover provides a slight refracting
`
`effect, such that light rays that otherwise would have missed the circular active
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`detection area are instead directed toward that area as they pass through the
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`interface provided by the cover. APPLE-1047, ¶¶38-39; APPLE-1019, 52;
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`APPLE-1007, [0015]; APPLE-1051, 87-92, 135-141; APPLE-1052, 60:7-61:6,
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`70:8-18.
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`More specifically, because covers used in pulse detection and pulse oximetry
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`tend to have indices of refraction that differ slightly from the index of refraction of
`
`human tissue, a cover like Ohsaki’s would have been understood to increase
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`Mendelson-799’s light-gathering ability by causing light to refract towards the
`
`circular active detection area as it crosses the interface provided by the cover such
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`that, overall, more of the partially reflected, transmitted, absorbed, and ultimately
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`back scattered light strikes the detectors than otherwise would have absent the
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`cover. APPLE-1047, ¶40; APPLE-1051, 84; APPLE-1055, 1486; APPLE-1056,
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`1484; APPLE-1019, 52, 86, 90.
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`Indeed, contrary to Masimo’s assertions, as shown below, Ohsaki itself
`
`demonstrates the use of a cover featuring a convex surface to direct light to a non-
`
`centrally located detector. APPLE-1009, FIG. 2; see also APPLE-1008, FIG. 3;
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`APPLE-1047, ¶¶41-44.
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`18
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`2.
`
`A POSITA would have implemented the sensor
`resulting from the combination of Mendelson-799 and
`Ohsaki to prevent air gaps between the skin and the
`detectors
`Masimo argues that the addition of a convex cover “contradicts
`
`Mendelson ’799’s warning against ‘the potential for specular reflection…when an
`
`air gap exists between the sensor and the skin.” POR, 43-44. But Masimo ignores
`
`Ohsaki’s teachings that “the convex surface of the translucent member is in
`
`intimate contact with the surface of the user's skin.” APPLE-1009, [0025];
`
`APPLE-1047, ¶45. Masimo infers the presence of alleged “air gaps” based on un-
`
`labeled portions of Ohsaki’s FIG. 1. See POR, 44.
`
`Yet, it is well established that patent figures should not be interpreted as
`
`precise and drawn to scale unless otherwise stated. Hockerson-Halberstadt, 222
`
`F.3d at 956. Moreover, both experts agree that a POSITA would not have
`
`interpreted reference figures as precise drawings. See, e.g., APPLE-1047, ¶46; Ex.
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`2006, 73:19-21; APPLE-1052, 79:19-80:2.
`
`Even assuming for the sake of argument alone that the introduction of air
`
`gaps could arise through incorporation of a convex cover into Mendelson-799’s
`
`sensor, it would have been well within a POSITA’s capability to apply “inferences
`
`and creative steps” when adapting Ohsaki’s teachings to obviate such air gaps.
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`APPLE-1047, ¶47; KSR, 550 U.S. at 418. Moreover, the very teachings of
`
`Mendelson-799 cited by the POR would have motivated the POSITA to adapt
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`19
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`Ohsaki’s teachings in that manner. APPLE-1047, ¶47; APPLE-1012, 2:58-61,
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`Case No. IPR2020-01714
`Attorney Docket: 50095-0024IP1
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`5:60-63; Ex. 2008, 229-7-13.
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`Finally, even if some minor air gaps would have remained, it is well
`
`established that “simultaneous advantages and disadvantages…does not
`
`necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437
`
`F.3d 1157, 1165 (Fed. Cir. 2006); APPLE-1047